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For Lack of a Survey…(This Time on Fame at the TTAB)

John Welch blogged about the TTAB’s decision to sustain the opposition to registration of the mark THE HOUSE THAT JUICE BUILT (and a related design mark) for various baseball related items. The Board found that both marks were likely to cause dilution-by-blurring of the Yankee’s registered mark THE HOUSE THAT RUTH BUILT. (Yankee haters can draw their own conclusions about parody, while Yankee fans may complain about tarnishment—“juice” being slang for “steroids.”)

A key component of any dilution claim is that the mark is “famous.” According to the statute language (The Trademark Dilution Revision Act) the mark must be “widely recognized” by the general consuming public of the United States. Is THE HOUSE THAT RUTH BUILT (referring to Yankee Stadium) widely recognized by the general consuming public of the United States? Not just baseball fans, but a large proportion everyone in the U.S.? McCarthy has proposed that, if fame is to be measured by a survey, the “minimum threshold survey response should be in the range of 75% of the general consuming public.” 1

While we haven’t done the survey, I would be surprised if that phrase were recognized by even a majority of the population. Or even by a majority of the people who consider themselves baseball fans. But the proponents didn’t present any survey evidence to counter the notion that the Yankee’s mark was famous. Here’s another situation in which a relatively simple and inexpensive (yes, surveys can be inexpensive) could have given the proponents of the mark a chance to prevail. But without any evidence of lack of widespread recognition, they were out at first base.

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Applied Marketing Science

Founded in 1989 with roots in the MIT Sloan School of Management, Applied Marketing Science is a market research and consulting firm with an established practice focused on consumer surveys for litigation.

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